A l’Empresa familiar com en el futbol
2. Concepte i naturalesa del consell de família
Today, attention has shifted to DNA. The DNA molecule, in its natural form, contains the information that governs inheritance. Isolated segments of DNA have uses in medicine, including as probes to detect the presence in a sample of a targeted genetic sequence. In
284. Id.
285. 97 F.2d 599 (C.C.P.A. 1938). 286. Id. at 601.
287. 107 F.2d 618 (C.C.P.A. 1939). 288. See id.
289. Id. at 619. Another scientist had isolated the substance before, but he had not recognized it as vitamin C. Id.
290. Id. at 620.
291. In re Bergy, 596 F.2d 952, 982 (C.C.P.A. 1979). 292. Id.
Association for Molecular Pathology v. Myriad Genetics, Inc.,293 the patentee, Myriad, claimed isolated human DNA having mutations associated with susceptibility to breast and ovarian cancer.294 The isolated DNA can be used to identify patients who have an elevated risk of developing the disease. Some of Myriad’s claims covered molecules identical to their natural counterparts, except for their separation from a longer strand of nucleotides. Other claims covered equivalent cDNA—molecules including the same genetic information, but synthesized in the laboratory from different components, and omitting the “introns” that do not code for proteins.295 The issue was whether the isolated DNA sequences, or their cDNA counterparts, were products of nature or patentable inventions.
The Federal Circuit produced three opinions, each illustrating a distinct approach to patentable subject matter. Judge Lourie found that the isolated genes were patent-eligible compositions of matter— “product[s] of human ingenuity”296—primarily because physical differences distinguished the invention from naturally-occurring DNA.297 The severing of covalent bonds created a molecule with a “distinctive chemical identity.”298 Judge Moore reached the same result, but rather than emphasizing physical or chemical changes, she stressed the practical applications made possible by isolation of the genes—a “new and important utility.”299 Judge Bryson would not have found the isolated genes eligible for patenting.300 Comparing the isolated genes to leaves plucked from a tree,301 he would have applied the same approach to DNA, a natural phenomenon, that the Supreme Court applied to natural laws in Mayo.302 Specifically, Judge Bryson would have required an “inventive concept” that added to the naturally- occurring genes “more than ‘well-understood, routine, conventional’
293. 133 S. Ct. 2107 (2013). 294. Myriad, 133 S. Ct. at 2112–13. 295. Id. at 2113.
296. Ass’n for Molecular Pathology v. U.S. Patent & Trademark Office, 689 F.3d 1303, 1325 (Fed. Cir. 2012).
297. Although the isolated sequence coded for the same proteins as the sequence found in nature, Judge Lourie found the “informational content” of the DNA irrelevant. Id. at 1330. “We recognize that biologists may think of molecules in terms of their uses, but genes are in fact materials having a chemical nature and, as such, are best described in patents by their structures rather than by their functions.” Id.
298. Id. at 1328.
299. See id. at 1341–42 (Moore, J., concurring). 300. Id. at 1348.
301. Id. at 1352 (Bryson, J., concurring). 302. Id. at 1354–55.
elements.”303 Isolation of the DNA by known techniques fell short of that “inventive concept.”304 However, Judge Bryson agreed with the other judges that cDNA, which must be created in the laboratory, is patent-eligible subject matter.305
The Supreme Court agreed with Judge Bryson that isolated DNA cannot be patented. Identifying the genes in question was a significant advancement in knowledge, but that was the essence of Myriad’s contribution.306 Myriad did not create the genes, and isolating them from their surroundings was “not an act of invention.”307 The cDNA, on the other hand, was the product of human ingenuity and, as such, eligible for patenting.308 In some respects, the brief opinion does not take us far beyond Latimer, which held in 1889 that products of nature extracted from their natural surroundings are not patent-eligible inventions. The court does not call explicitly for an “inventive concept” to distinguish a patent-eligible invention from a product of nature. Instead, the opinion suggests a relatively stark distinction between creation and discovery.309 The cDNA can be patented because it is “something new” that “the lab technician unquestionably creates.”310 The court does not explore whether creating cDNA is a conventional or routine step after the target gene has been identified. With respect to the DNA, the court suggests that one might patent new applications made possible by the discovery, and it notes that Myriad is in an “excellent position” to do so.311 Whether such an application would be judged as though the gene had already been identified, the court does not explain.312 Although Judge Bryson would have adopted a penumbral mode of unpatentable subject matter, at the moment there is
303. Id. at 1355. 304. See id. 305. Id. at 1356.
306. .See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117– 18 (2013). “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Id. at 2117.
307. Id. at 2117. 308. Id. at 2119.
309. Although the court acknowledged that the isolated DNA constituted a “nonnaturally occurring molecule,” it found that the claims were “not expressed in terms of chemical composition” and did not “rely in any way on the chemical changes that result from the isolation.” Id. at 2118. The “focus” of the claims was on the unchanged genetic information. Id.
310. Id. at 2119. 311. Id. at 2119–20.
312. The court does say that if Myriad had used “an innovative method of manipulating genes,” rather than routine processes for isolating DNA, that “innovative method” might have been patentable. Id. at 2119.
little evidence that the Supreme Court will do so in the context of concrete natural phenomena like DNA.
V. PATENTABLE INVENTIONS AND ABSTRACT IDEAS
After natural laws and natural phenomena, the third category of unpatentable subject matter is “abstract ideas.” Currently there is much uncertainty as to what the term “abstract idea” means.313 In the context of patent claims, “abstract” could refer to an absence of detail or to an absence of tangible embodiments. A claim to “any electrical generator” is abstract in the first sense, but each example of a generator within the scope of the claim would be, by its nature, concrete. In contrast, a claim to a method of structuring a loan might be quite detailed, but any embodiment within the scope of the claim would consist of symbols, financial obligations, and legal consequences—another layer of intangibles. If we are concerned about patents that are too broad, the former claim might be most objectionable; if we are concerned about patents that exceed the traditional bounds of technology, the latter is more problematic. To further complicate things, “abstract” can also refer to an absence of utility. If Einstein had claimed E=mc2 without
reference to any practical application, his claim might have been deemed abstract in that sense. On the other hand, if he had claimed “the use of E=mc2 in the operation of a nuclear power plant,” the claim
would have lacked detail, but not practical application. Without defining our terms, we cannot agree on which of these claims embraces an abstract idea.
Judge Nelson, writing in dissent in Le Roy and referring to the case involving Neilson’s furnace, concluded that non-utility is the measure of abstractness.314 An “abstract principle,” he wrote, means “a principle considered apart from any special purpose or practical operation.”315 When a principle is applied to a useful purpose, “[i]t is no longer an abstract principle.”316 It becomes “a principle turned to account, to a practical object, and applied to a special result.”317 In Neilson, the abstract principle was a fact about nature: that warm air provides more efficient combustion. The invention was the application of that principle in a furnace by pre-heating the air, before it enters the
313. See Mark A. Lemley, Life After Bilski, 63 STAN.L.REV. 1315, 1316 (2011) (“Put simply, the problem is that no one understands what makes an idea ‘abstract.’”).
314. Le Roy v. Tatham, 55 U.S. 156, 185 (1853) (Nelson, J., dissenting). 315. Id.
316. Id. 317. Id.
combustion chamber, in a separate vessel. The patentee did not limit himself to any particular type of vessel by specifying its size or shape, or the materials from which it should be made.318 But having crossed the line from principle to application, the invention was no longer abstract.
Samuel Morse’s telegraph patent included a claim even less detailed than Neilson’s. Morse’s eighth claim embraced “the use of the motive power of the electric or galvanic current . . . however developed for marking or printing intelligible characters, signs, or letters, at any distances.”319 Disallowing the claim, the majority called attention to its breadth, and the danger that it would preempt further advancements in the art:
It is impossible to misunderstand the extent of this claim . . . . If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff's specification. His invention may be less complicated—less liable to get out of order—less expensive in construction, and in its operation. But yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.320
Dissenting Judge Grier argued that Morse’s claim, like Neilson’s, was not abstract. In spite of its breadth,321 the claim covered no more than a useful application of the natural forces of electro-magnetism. Reverting to the principle/application dichotomy, Grier wrote that one “who takes this new element or power, as yet useless, from the laboratory of the philosopher, and makes it the servant of man . . . is the benefactor to whom the patent law tenders its protection.”322 If Morse’s “art” consisted of “compelling this hitherto useless element,” electricity, to convey printed messages at a distance, “how can it be said that the claim is for a principle or an abstraction?”323
318. Neilson v. Harford, 51 Eng. Rep. 1266, 1274 (Exch. Of Pleas) (1841). 319. O’Reilly v. Morse, 56 U.S. 62, 112 (1854).
320. Id. at 112–13.
321. Grier viewed the claim, unlimited as it was, as nothing more than Morse’s “whole invention.” Id. at 135 (Grier, J., dissenting). If other inventors improved upon Morse’s “art,” they could obtain their own patents—an arrangement that had not been found to hinder the advance of technology in the case of patented machines. Id. at 134.
322. Id. at 132–33. 323. Id. at 135.
In fact, it is not clear that even the majority viewed Morse’s claim as one to “a principle or an abstraction.” Their complaint was that Morse’s claim was broader than what his detailed disclosures showed to be his invention.324 Morse claimed “a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent.”325 The court distinguished Neilson as a case in which the vessel might be built in any number of ways, and “all of them would produce the effect in greater or less degrees.”326 Anyone who employed an air-heating vessel, no matter how they did it, would be taking advantage of Neilson’s advancement. Morse, in contrast, claimed his invention in terms of a result— transmitting messages by electricity. Others who obtained the same result might do so by entirely different means, so Morse’s disclosures could not justify such a broad claim. Today, such overbreadth might be treated as a failure to satisfy the written description or enablement requirements.327
The association of abstract ideas with non-utility did not end with Morse. In In re Alappat, the Federal Circuit defined “abstract ideas” as “disembodied concepts or truths which are not ‘useful’ from a practical standpoint standing alone, i.e., they are not ‘useful’ until reduced to some practical application.”328 However, breadth and preemption—the qualities singled out in Morse—have become more prominent markers of unpatentable subject matter. In Benson, the court did not deny that the applicant’s mathematical algorithm for converting one form of binary number to another could be usefully applied.329 The problem lay in the breadth of the claim. It was “so abstract and sweeping as to cover both known and unknown uses of the BCD to binary conversion.”330 The algorithm might be used to operate a train, verify drivers’ licenses, or research legal precedents, and it might be performed with machinery yet to be invented, or no machinery at all.331 Because the applicant had not limited himself to a particular use of the mathematical algorithm, his claim was too abstract to be patented.
The Supreme Court addressed abstract ideas in Bilski v. Kappos, where the patentee claimed a method of hedging risks for buyers and
324. Id. at 113. 325. Id. at 113. 326. Id. at 115–16. 327. See supra Part I.B.
328. 33 F.3d at 1526, 1542 n.18 (Fed. Cir. 1994) (en banc). 329. Gottschalk v. Benson, 409 U.S. 63, 68 (1972). 330. Id.
sellers of energy market commodities by engaging the services of a middleman.332 With little explanation, the court identified risk-hedging itself as an “abstract idea.”333 Although the claims limited the use of risk-hedging to certain markets, the court found that even “limiting an abstract idea to one field of use or adding token post solution components [does] not make the concept patentable.”334 The claims in Bilski added nothing to the underlying abstract idea other than “the use of well known random analysis techniques.”335 The authority on which the court principally relied was Flook, which had been similarly dismissive of field-of-use limitations and “token” additions representative of “the draftsman’s art.” Justice Stevens, in a concurring opinion, criticized the majority for inadequately defining “abstract ideas,” and for seeming to interject into the subject matter inquiry considerations of indefiniteness and novelty.336
The Federal Circuit has often dealt with cases like Bilski involving endeavors far removed from the industrial settings traditionally associated with patentable inventions. Inventions today often manipulate information, rather than the forces of nature. The intangible quality of the subject matter makes concerns of abstractness difficult to avoid. In such cases, the Federal Circuit, focusing on preemption, has looked for some “meaningful limits” imposed by the use of computers or other technology.337 In SiRF Technology, Inc. v. International Trade Commission,338 the court found that the claimed methods could not be performed without a GPS receiver, and that the necessity of such a receiver “place[d] a meaningful limit on the scope of the claims.”339 In Bancorp Services, L.L.C. v. Sun Life Assurance Co., the patent claimed a computer-implemented system for stabilizing the value of employee life insurance policies owned by corporations and banks.340 Here the court did not find that the use of a computer was “integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not.”341
332. Bilski v. Kappos, 561 U.S. 593, 599 (2010). 333. Id. at 611–12.
334. Id. at 612. 335. Id.
336. Id. at 620–21 (Stevens, J., concurring).
337. The Federal Circuit’s earlier attempt to limit patentable process claims to those that work a physical transformation, or that require a particular machine, was rejected by the Supreme Court in Bilski. Id. at 602–03.
338. 601 F.3d 1319 (Fed. Cir. 2010). 339. SiRF Technology, 601 F.3d at 1332–33. 340. See 687 F.3d 1266, 1269–70 (Fed. Cir. 2012).
The Federal Circuit’s emphasis on “meaningful limitations” leaves one question unresolved: does anything that restricts the scope of claim suffice, or must a patentee add something “inventive” to the abstract idea—something, other than the idea itself, that is unconventional or nonobvious? In other words, does the penumbral model of unpatentable subject matter, associated in Mayo with laws of nature, apply equally to abstract ideas?342 The Supreme Court’s recent decision in Alice Corp. v. CLS Bank International suggests that it does.343
The patents in Alice concern a method of eliminating “settlement risk”—the risk that one party to a transaction will fail to meet its obligations—through the use of a trusted intermediary.344 In this case, the intermediary generates “shadow” records reflecting the current assets of the transacting parties in real-world financial institutions, and permits transactions only in cases where the records demonstrate the existence of sufficient resources.345 In the end, it compels the financial institutions to execute the transfers necessary to meet the parties’ obligations.346 The patent included claims to the method itself and to a computer programmed to carry it out.347
The Federal Circuit’s en banc decision elicited seven separate opinions.348 The brief per curiam opinion found all the claims ineligible for patenting.349 Of the remaining opinions, Judge Lourie’s concurrence was the most ambitious. He called for a “consistent, cohesive, and accessible approach to the § 101 analysis”350 based on the concept of preemption. Patent claims, he wrote, should not preempt “fundamental principle[s].”351 Accordingly, a claim premised on an
(Fed. Cir. 2012) (finding that the “basic character” of a claim to an abstract idea “is not changed by claiming only its performance on computers;” the machine “must impose meaningful limits on the claim’s scope.” (citations omitted)).
342. Judge Mayer of the Federal Circuit, following the lead of Bilski and Mayo, argued that the disclosure of “conventional computer technology” could not make patent-eligible an otherwise abstract idea; what is needed is “new technology or [an] ‘inventive concept.’” Highmark, Inc. v. Allcare Health Management Sys., Inc., 687 F.3d 1300, 1324 (Fed. Cir. 2012) (Mayer, J., dissenting in part). 343. 134 S. Ct. 2347 (2014). 344. Id. at 2349. 345. Id. at 2351. 346. Id. 347. See id. at 2349.
348. See CLS Bank International v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013) (en banc). 349. Id. at 1273.
350. Id. at 1277 (Lourie, J., concurring).
351. “Guarding against wholesale preemption of fundamental principles should be our primary aim.” Id. at 1281.
abstract idea must include “substantive limitations that . . . add ‘significantly more’ to the basic principle, with the result that the claim covers significantly less.”352 Although the limitation may be called an “inventive concept,” we are not looking for ingenuity or nonobviousness.353 What we are looking for is a “genuine human contribution”354 sufficient to “materially narrow[] the claims relative to the abstract idea they embrace.”355
Judge Rader’s concurring opinion put less emphasis on breadth and more on the principle/application dichotomy. Referring to the Neilson case, Judge Rader observed that “the abstract ideas exception deals not merely with breadth, because the ‘hot air’ claims were broad and covered many ‘mechanical arrangements’ but yet [were] found patent eligible.”356 The question is “whether the claim seeks to patent an idea itself, rather than an application of that idea.”357 However, this still turns on the presence of “meaningful limitations” that prevent the claim from covering every application of an abstract idea.358 While the Supreme Court in Mayo referred to “routine” or “conventional” steps as inadequate to constitute an “inventive concept,” Judge Rader viewed this as merely “shorthand” for discounting steps that one would “necessarily use” whenever applying a fundamental principle.359
The Supreme Court affirmed, explicitly adapting its Mayo framework to the question of whether a patent claim based on an abstract idea is eligible for patenting.360 In order to distinguish a patent- eligible application of an abstract idea from the idea itself, one must determine whether the claim includes an “inventive concept”—
352. Id. at 1281 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 123 S. Ct. 1289, 1294 (2012)). “With the pertinent abstract idea identified, the balance of the claim can be evaluated to determine whether it contains additional substantive limitations that narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the abstract idea itself.” Id. at 1282.
353. Id. at 1284. Although the Supreme Court, in Bilski and Mayo, dismissed additions that were conventional or routine, according to Judge Lourie it was not the lack of novelty that